WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

La Quinta Worldwide, L.L.C. v. Pablo Palermo

Case No. D2009-0603

1. The Parties

The Complainant is La Quinta Worldwide, L.L.C of Las Vegas, United States of America, represented by Lydecker, Lee, Behar, Berga & de Zayas, L.L.C, United States.

The Respondent is Pablo Palermo of San Isidro, Peru.

2. The Domain Name and Registrar

The disputed domain name <laquintain.com> is registered with BackSlap Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2009. On May 7, 2009, the Center transmitted by email to BackSlap Domains, Inc. a request for registrar verification in connection with the disputed domain name. On May 7, 2009, BackSlap Domains, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 11, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint and an amended Complaint on May 11, 2009 and May 12, 2009, respectively. The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 13, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was June 2, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 3, 2009.

The Center appointed Brigitte Joppich as the sole panelist in this matter on June 10, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.

The Complainant filed another amendment to the Complaint on May 18, 2009.

4. Factual Background

The Complainant operates hotels under the name “La Quinta”. The Complainant was founded in 1968 and today owns, operates, manages and franchises over 700 hotels with over 65,000 hotel rooms in 42 states in the United States, in Canada and in Mexico and employs over 9,000 employees.

The Complainant owns a multitude of applications and registrations worldwide for its LA QUINTA and LAQUINTA INN trade marks, in particular the following trade mark registrations for LA QUINTA and LA QUINTA INN (the “LA QUINTA Marks”):

- United States Registration No. 875802 LA QUINTA & design in class 43, files May 6, 1968 and registered on August 26, 1969;

- United States Registration No. 1080641 LA QUINTA in class 43, filed on March 24, 1977 and registered on December 27, 1977;

- United States Registration No. 1823440 LA QUINTA INN & design in class 43, filed on May 21, 1993 and registered on February 22, 1994;

The Complainant uses numerous domain names to provide its services on the Internet, including <laquinta.com>, <lq.com>, <orlandolaquinta.com>, <laquintareturns.com>, <laquintafranchise.com>, <laquintafranchising.com>, and <laquintainn.com>.

The disputed domain name was registered on February 3, 2003 and was formerly used in connection with a parking website. Currently, the Respondent is using the disputed domain name in connection with a website providing a series of links to various topics, including traveling and hotels.

5. Parties' Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:

(1) The disputed domain name is confusingly similar to the Complainant's LA QUINTA Marks as it wholly incorporates the Complainant's trademarks LA QUINTA in its entirety. Furthermore, the disputed domain name creates the same overall impression as the Complainant's trade mark LA QUINTA INN and contains a common misspelling of the word “inn”.

(2) The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that there is no evidence of the Respondent's use of, or preparations to use the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services and that the Respondent's use of the disputed domain name in connection with a parking website is not bona fide under the Policy. The Complainant further contends that the Respondent offers no services and makes no reference to a brand of its own on the website available at the disputed domain name and is therefore not commonly known by or affiliated with the disputed domain name, that the Complainant has never authorized the Respondent's use of its LA QUINTA Marks and, finally, that the Respondent is not making a legitimate, non-commercial or fair use of the domain name.

(3) Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. Upon the Complainant's contentions, the Respondent's bad faith registration of the disputed domain name is evidenced by the fact that the disputed domain name is confusingly similar to the famous LA QUINTA Marks and that the Respondent has no relationship to that mark. Furthermore, the Complainant contends that the Respondent was clearly aware of the Complainant and registered the disputed domain name for the purpose of profiting from the Complainant's name and goodwill and that it is well established that the practice of typo squatting is in itself evidence of the bad faith registration of a domain name. With regard to bad faith use, the Complainant contends that the use of a domain name in order to profit from the Complainant's services without license or permission is evidence of bad faith registration and use pursuant to the Policy. Furthermore, the Complainant contends that the Respondent registered and used the disputed domain name to take advantage of the Complainant's name and goodwill for its own profit by establishing a site offering competing hotel reservations to the Complainant's hotels using the Complainant's trademarks and images under the guise that the Respondent's site was somehow affiliated, connected, or associated with the Complainant.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

The first point to be discussed is the admissibility of the supplemental submission filed by the Complainant. The Rules do not expressly provide for the parties to file supplemental submissions on their own volition, and paragraph 12 of the Rules provides that a panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admission of additional arguments or evidence.

One of the grounds justifying new submissions is the existence of new pertinent facts that did not arise until after the complaint was filed. For instance, if the respondent raises objections that could not have been anticipated when the complaint was filed, the panel can give the complainant a right to reply to the submission or may accept the complainant's unsolicited additional submission (see UNIVERSAL CITY STUDIOS, Inc. v. G.A.B. ENTERPRISES,
WIPO Case No. D2000-0416; QNX Software Systems Ltd. v. Future Media Architects, Inc. and Thunayan K AL-Ghanim,
WIPO Case No. D2003-0921; Goldline International, Inc. v. Gold Line,
WIPO Case No. D2000-1151).

The Complainant does not cite any exceptional circumstances necessitating further submissions, nor does the submission itself disclose any new facts or new legal authority not available at the time the amended Complaint was submitted. In its supplemental submission, the Complainant filed further arguments on the Respondent's identity. However, such arguments could easily have been brought forward in the Complainant's amended Complaint as the identity of the Respondent was already disclosed by the Registrar at that time. Therefore, the Panel elects not to accept the Complainant's supplemental submission and has not relied on it in reaching this decision.

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name fully incorporates the Complainant's widely known LA QUINTA Marks in which the Complainant has exclusive rights. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (see Dr. Grandel GmbH v. Drg Randel Inc.,
WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co.,
WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242). Furthermore, the disputed domain name is phonetically identical to and creates the same overall impression as the Complainant's trade mark LA QUINTA INN. The Panel believes that the average person will readily identify the Complainant's trade mark LA QUINTA INN in this domain name.

Furthermore, it is well established that the specific top level domain name generally is not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant's trademark and the disputed domain name (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,
WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,
WIPO Case No. D2000-0429; and Phenomedia AG v. Meta Verzeichnis Com,
WIPO Case No. D2001-0374).

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's LA QUINTA Marks and that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e;

(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panelists that in light of the difficulty of proving a negative a complainant has to make initially only a prima facie case that the requirements of paragraph 4(a)(ii) of the Policy are fulfilled. As a result, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.

The Complainant has asserted that the Respondent neither uses the domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services nor is commonly known by the disputed domain name, that the Respondent is not making any legitimate non-commercial or fair use of the disputed domain name, and that the Respondent therefore cannot have any rights or legitimate interests in the disputed domain name.

The Respondent did not deny these assertions in any way. The Complainant has therefore fulfilled its obligations under paragraph 4(a)(ii) of the Policy.

Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.

The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith. This point is clear from the wording of the Policy and has been confirmed ever since Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (see also Telstra Corporation Limited v. Adult Web Development and Telstraexposed,
WIPO Case No. D2002-0952; Telstra Corporation Ltd v. David Whittle,
WIPO Case No. D2001-0434; and Prada S.A. v. Mr. Chuan Sheng Wang,
WIPO Case No. D2003-0758).

The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the LA QUINTA Marks. The Complainant has been carrying on business activities under LA QUINTA for many decades in North and South America. It is hardly conceivable that the Respondent registered the disputed domain name, which fully includes the Complainant's LA QUINTA Marks and consists of a phonetically identical misspelling of the Complainant's LA QUINTA INN Marks without knowledge of the Complainant's rights in the LA QUINTA Marks. This finding is supported by the fact that the Respondent used the disputed domain name for a parking website providing information on the Complainant itself and hotels in general. As the name “La Quinta” is not descriptive of the Complainant's services the Respondent would hardly have been able to provide related information without knowledge of the Complainant's business. The Panel is therefore satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant's marks and thus in bad faith under paragraph 4(a)(iii) of the Policy.

As to bad faith use, by fully incorporating the LA QUINTA Marks into the disputed domain name and by using the website at such domain name as a parking website the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainant's website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (see L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc.,
WIPO Case No. D2005-0623, with further references). The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.

Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <laquintain.com> be transferred to the Complainant.